Because Western Digital’s MyBook hard drives and Sling Media’s Slingbox did not ship with the software required to enable native processing of Java programs, they did not infringe Nazomi’s patents directed toward a hardware-software combination capable of directly running Java programs.

Opinion (Dyk): Nazomi Communs., Inc. ("Nazomi") sued Nokia Corp., Western Digital, Sling Media, Inc., and other defendants alleging their products infringed two of Nazomi’s patents directed at hardware based Java Virtual Machines capable of processing both stack-based and register-based applications. Java programs typically run in a virtual machine that translates the program into processor specific instructions. Although most modern processors use register-based memory, Java virtual machines use stack-based memory. This difference requires that stack-based memory instructions be translated into register-based instructions. Nazomi’s inventions cover a hardware-software combination that is capable of directly running Java compiled programs without the need for translation. In 2000, ARM, Inc. ("ARM") introduced processors capable of running Java programs in hardware when used with optional ARM software. Both Western Digital's MyBook hard drives and in Sling Media’s Slingbox use those processors, although neither product includes the optional ARM software. The district court granted Western Digital and Sling Media’s motion for summary judgment of non-infringement, from which Nazomi appealed. On appeal, Nazomi argued that, although the accused products lacked the necessary software, an apparatus claim directed at a computer is infringed when the accused product is designed in a way that enables the user to perform the claimed function without modifying the product. The Federal Circuit observed, however, that the rule advanced by Nazomi only applies when the product is presently configured in a manner capable of infringing, although the infringing functionality is not enabled. Because the MyBook and Slingbox products were not shipped in a configuration that was capable of infringing without the installation of new software, the Federal Circuit AFFIRMED the district court’s grant of summary judgment of non-infringement.